Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
All the references cited in the International Search Report have been considered. None is anticipatory or meet the amended claims.
The previous restriction has been withdrawn. The wording of “suitable for” in step C of claim 1 is recommended to be removed.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 14-20 and 22-31 is (are) rejected under 35 U.S.C. 103 as being unpatentable over Godici et al. (GB 2384245).
As to claims 14-20 and 22-31, Godici (abs., claims, examples. Table 1) discloses a process of continuously mixing and polymerizing/oligomerizing (7:3-30, 8:1-30, Ex.1-4) dioctyldiphenylamine (as to instant claims 17 and 19), 1,2,2,2-tetramethylbuylnaphtalen 1-amine (instant claims 18-19), in presence of di-t-butyl peroxide (as to instant claim 21) and an ester lubricant. The reaction is carried out at 70-200 °C (7:3-5), overlapping with the claimed temperature ranges of instant claims 14-16. It has been found that where claimed ranges overlap ranges disclosed by the prior art, a prima facie case of obviousness exists - see MPEP 2144.05. One of ordinary skill in the art would obviously recognize to apply the disclosed reaction temperature ranges to meet the claimed ones. After the polymerizing/oligomerizing the mixture is heated at 140-200 °C at reduced pressure (7:20-25) for 2 hours to remove reagent residual, particularly the peroxide having a half-life of 1 hour at 70-200 °C. This heating process would inherently reduce the peroxide residual ≤25% (as to instant claims 26-29), because the peroxide has a half-life of 1 hour at 70-200 °C.
Particularly to claim 20, Godici (7:9-19) discloses using solvent to dissolve amine reactants. In light of this, one of ordinary skill in the art would obviously recognize to dissolving amine reactants in the ester lubricant before polymerizing/oligomerizing to facilitate the reaction. Furthermore, particularly to claims 23-24, in light of this, one of ordinary skill in the art would obviously recognize to dissolving all the reactants including the lubricant with preheating <70°C to facilitate the sequential polymerizing/oligomerizing and avoid degradation of peroxide, because Godici teaches the peroxide has a half-life of 1 hour at 70-200 °C.
Particularly to claim 25, Godici (8:29-30) implies cooling the reaction mixture to equal or above room temperature for product collection.
As to claims 30-31, Godici (Table 1) discloses the monomer residual is lower than 3 wt% but is silent on the claimed method of measurement (GC/SFC). Accordingly, the examiner recognizes that not all of the claimed effects or physical properties are positively stated by Godici. However, Godici teaches a process using the claimed steps, claimed processing conditions, and the claimed components in the claimed amounts. Therefore, one of ordinary skill would have a reasonable expectation that the claimed effects and physical properties, i.e. monomer residual measured via GC/SFC, would necessarily flow from a process employing the claimed steps, claimed processing conditions, and the claimed components in the claimed amounts. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. See In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990); see also MPEP § 2112.01(I)-(II). If it is the applicant’s position that this would not be the case: (1) applicant must provide evidence to support the applicant’s position, and (2) it would be the examiner’s position that the application contains inadequate disclosure on how to obtain the claimed effects or properties with only the claimed steps, claimed processing conditions, and the claimed components in the claimed amounts.
Claim(s) 21 is (are) rejected under 35 U.S.C. 103(a) as being unpatentable over Godici et al. (GB 2384245) ) in view of Zehler et al. (US 20130035268).
Disclosure of Godici is adequately set forth in ¶1 and is incorporated herein by reference.
Godici is/are silent on the ester of pentaerylthritol/C9 branched carboxylic acid.
Godici (3:15-4:10) teach the lubricant embracing a species of an ester of pentaerylthritol/C4-12 branched carboxylic acid. A lubricant of pentaerylthritol/C9 branched carboxylic acid (isononanoic acid) is well known and taught by Zehler (claim 16). In light of this, one of ordinary skill in the art would obviously recognize to utilize the lubricant of pentaerylthritol/C9 branched carboxylic acid (isononanoic acid) as taught by Godici and Zehler.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHANE FANG whose telephone number is (571)270-7378. The examiner can normally be reached on Mon-Thurs. 8am-6pm. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached on 571.572.1302. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SHANE FANG/Primary Examiner, Art Unit 1766
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